Académique Documents
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Jonathan Stroud, Reg. No. 72,518 Ashraf A. Fawzy, Reg. No. 67,914
jonathan@unifiedpatents.com afawzy@unifiedpatents.com
Unified Patents Inc. Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10 1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20009 Washington, D.C. 20009
Telephone: (202) 805-8931 Telephone: (202) 871-0110
v.
IPR2017-01856
Patent 7,681,124
____________
TABLE OF CONTENTS
I. Introduction ......................................................................................................... 1
II. Summary of the 124 Patent .............................................................................. 2
A. Description of the alleged invention of the 124 patent .................................. 2
B. Summary of the prosecution history of the 124 patent .................................. 2
III. Requirements for Inter Partes Review under 37 C.F.R. 42.104 .................... 4
A. Grounds for standing under 37 C.F.R. 42.104(a) ......................................... 4
B. Identification of challenge under 37 C.F.R. 42.104(b)
and relief requested ......................................................................................... 5
C. Level of skill of a person having ordinary skill in the art ............................... 6
D. Claim construction under 37 C.F.R. 42.104(b)(3) ....................................... 6
IV. There is A Reasonable Likelihood that The Challenged Claims of the 124
Patent Are Unpatentable ................................................................................... 9
A. Overview of the prior art ............................................................................... 10
B. Ground 1: Claims 19-21 are obvious over Fukushima in view of Witten .... 10
C. Ground 2: Claims 36 and 40 are obvious over Fukushima in
view of Capps ................................................................................................ 29
D. Ground 3: Claims 1-11, 16-18, and 37-40 are obvious over Fukushima,
Capps, and Witten ......................................................................................... 38
E. Ground 4: Claims 12-15 are Obvious over Fukushima, Capps, Witten, and
Flinchem ........................................................................................................ 53
F. Ground 5: Claims 19-21 are obvious over Schroeder in view of Witten ...... 56
G. The Computer-Readable Medium Claims ................................................. 68
V. Conclusion........................................................................................................ 69
VI. Mandatory Notices Under 37 C.F.R. 42.8(a)(1) .......................................... 70
A. Real Party-In-Interest .................................................................................... 70
B. Related Matters ............................................................................................. 70
C. Lead and Back-Up Counsel ........................................................................... 70
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U.S. Patent No. 7,681,124
I. INTRODUCTION
Partes Review (IPR) of claims 1-21 and 36-41 (collectively, the Challenged
The 124 Patent relates to a user interface for predicting and presenting text
completion candidates in response to a users partial text entry. Notably, the 124
and to the display of a digital keyboard but the fundamental technical concepts
described and claimed in the 124 Patent existed years before the earliest possible
priority date of the 124 Patent. For example, on-screen keyboards had existed by
the early 1990s, over ten years prior to the 124 Patent. Lieberman Decl. (EX1009)
at 25-26. Word completion and prediction software had also been developed
long before 1999, and the 124 Patent suggests no nonobvious methods of
suggesting completion candidates for partial text entries. Id. at 23-24. The
concept of a pop-up or disappearing keyboard also existed well before 1999. See
id. at 26-30. One of skill in the art would have recognized by 1999 that there
were many obvious ways one could design a user interface to perform the function
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at 24, 42. And the purportedly inventive concepts would have required the
already existed in the field of text input systems. Petitioner, therefore, respectfully
The 124 Patent relates to a user interface for a predictive text entry system.
In general, the claims of the 124 Patent were allowed because of limitations
related to (i) displaying a digital keyboard while not displaying a list of suggested
words or phrases, and (ii) suggesting new candidates based on a prior selected
detail below, these concepts, or obvious variations thereof, already existed in the
prior art.
Application No. 11/134,810, which resulted in the 124 Patent, was filed on
May 19, 2005. 124 Patent (EX1001). For purposes of this proceeding, Petitioner
simply assumes that the priority date for the Challenged Claims is March 18, 1999,
the earliest claimed priority date. The 810 application, which was filed as a
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claims. File History (EX1002) at 790-798. Those 33 claims were subsequently
cancelled and replaced with a set of 41 new claims. Id. at 364-379. All but two
claims were rejected outright as either anticipated or obvious, with those two
claims indicated as containing allowable subject matter. Id. at 283. The first claim
related to clearing the display of the digital keyboard or a search listnot both. See
id. at 285, 365. The second claim related to searching for and displaying a new set
a completion candidate and initiating further searching. See id. at 285, 367. The
applicant re-drafted and added independent claims to include the subject matter of
these claims, and argued that the concept of having a second set of completion
Challenged Claims:
For independent claims 126, 127, 130, and 174 (issued claims 1, 5, 9,
and 36), the examiner stated that these include the notion whereby a
user only sees and can interact with either a digital keyboard or a
examiner stated that these include the notion whereby the selection
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of a completion candidate is performed for the purpose of invoking a
deactivated in certain circumstances was already well known in the art of user
interfaces by 1999. See Lieberman Decl. (EX1009), at 26-30. For example, U.S.
Regarding the second reason, this limitation merely repeats the search for
discussed below, this concept was taught by Darragh and Witten in their well-
known text, The Reactive Keyboard, published in 1992. See id. at 31-32.
Petitioner certifies that the 124 patent is available for IPR and that the
Petitioner is not barred or estopped from requesting IPR challenging the claims of
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B. Identification of challenge under 37 C.F.R. 42.104(b) and relief
requested
In view of the prior art and evidence, claims 1-21 and 36-41 of the 124
on the prior art references identified below, IPR of the Challenged Claims should
Exhibit
Proposed Ground of Unpatentability
Nos.
Ground 1: Claims 19-21 are obvious over U.S. Pat. No. 5,724,457
to Fukushima (Fukushima) in view of Darragh and Witten, The 1003, 1004
Reactive Keyboard (1992) (Witten)
Ground 2: Claims 36 and 41 are obvious over Fukushima in view
1003, 1005
of U.S. Pat. No. 5,367,453 to Capps et al. (Capps)
Ground 3: Claims 1-11, 16-18, and 37-40 are obvious over
1003, 1005,
Fukushima in view of Capps in further view of Witten 1004
Ground 4: Claims 12-15 are obvious over Fukushima in view of
Capps in further view Witten, and in further view of U.S. Pat. No. 1003, 1005,
1004, 1006
6,307,548 to Flinchem et al. (Flinchem)
Ground 5: Claims 19-21 are obvious over U.S. Pat. No. 5,797,098
1007, 1004
to Schroeder et al. (Schroeder) in view Witten
Section IV, infra, identifies where each element of the Challenged Claims is
found in the prior art. 37 C.F.R. 42.104(b)(4). The exhibit numbers of the
supporting evidence relied upon to support the challenges are provided above and
the relevance of the evidence to the challenges raised are provided in Section IV.
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37 C.F.R. 42.104(b)(5). Exhibits EX1001EX1026 are also attached.
A person having ordinary skill in the art (PHOSITA) of the 124 Patent by
March 18, 1999, would have been a person with (1) the equivalent of a bachelors
similar discipline, and (2) at least one year of experience working with technology
42.100(b). Petitioner proposes the below constructions, and all claim terms not
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ii. completion candidate
include, but are not limited to, word continuations. Id. at 9:19-23; see also id. at
9:1-5, 9:66-10:5, 11:24-28, 11:57-61. 1 The 124 Patent also teaches that a
completion candidate may represent only part of the entry the user wishes to add
and, thus, need not complete the entirety of the entry. See id. at 15:62-67. The 124
an input device that allows a user to select one choice amongst one or many
choices, and the BRI also includes the expressly disclosed examples of a pen,
34:64-35:1.
1
Unless otherwise indicated, all emphases have been added by Petitioner.
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iv. displaying / activating or not displaying / deactivating /
clearing the digital keyboard or search list
preferred embodiment):
When the digital keyboard 28 and the interactive search list are
interchangeable, the image of the digital keyboard 28 and the
image of the interactive search list 30 share substantially the
same display area on the graphical user interface 34. The data
entry system 26 for the first embodiment is preferably
programmed to automatically swap between the digital
keyboard 28 and the interactive search list 30 depending upon
the input provided by user [sic] from the pointing device.
Id. at 10:63-11:4; see also id. at 2:19-24, 35:35-46. But the 124 Patent also
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Id. at 35:57-64; see also id. at Abstract, 2:37-52, 4:58-67.
The claim language itself does not specify whether the display/activation of
Therefore, Petitioner notes that the BRI of these limitations includes both manually
and keyboard.2
digital keyboard while displaying a search list. Independent claims 1, 9, 19, and 20
include limitations relating to displaying a second list (or new list or further
below, neither of these limitations nor their combinations were non-obvious, and
the dependent claims fail to add any non-obvious concepts to the independent
claims.
2
The Board, of course, may determine this express construction is unnecessary.
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A. Overview of the prior art
Each prior art reference below relates to systems and methods for text entry
on a computing device, and each recites ways of displaying text and some form of
intelligence related to what the system thinks the user is trying to type, whether
for the display and operation a graphical user interface for predictive text entry
systems allowing a user to select text from a list of suggestions for input into, for
consider the teachings of these different text input systems and would find that
incorporating the features of one text system into another would require only minor
1995 and issued March 3, 1998, and, therefore, is 102(b) prior art to the 124
Patent. See Fukushima (EX1003). Like the 124 Patent, Fukushima relates to a
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character input system wherein one or more predicted character string candidates
are suggested upon entry of a character. See id. at Abstract, 2:42-60, 3:8-22, 6:10-
22, Figs. 1-2, 5, 6A-6F, 9-14, Claims 1, 6, 13. Although the preferred embodiments
in Fukushima are taught using handwritten text entry, it teaches that its invention
Fukushima is both within the field of endeavor of and reasonably pertinent to, and,
thus, analogous to the alleged invention of the 124 Patent. See Lieberman Decl.
John Darragh and Ian Witten (Witten). See Witten (EX1004) at 5. Witten was
later than December 1997. See Bennett Decl. (EX1026) at 28-39. Therefore,
Witten is a prior art printed publication to the 124 Patent under 35 U.S.C.
102(b).
Like the 124 Patent, Witten relates to text entry using predictive text
users with disabilities to type efficiently. See Witten (EX1004) at 16-20. Witten not
only explains the use of the Reactive Keyboard, but it also provides a detailed
background of text entry technology. See id. at 38-59. Although Witten generally
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teaches the application of its system on desktop personal computers, the claims of
the 124 patent are not limited to hand-held devices. See 124 Patent (EX1001) at
devices) see also id. at 7:17-26 (describing desktop computers as one type of
Decl. (EX1009) at 39, 42, 50. Therefore, Witten is both in the field of endeavor of
and reasonably pertinent to, and, thus, analogous to the 124 Patent.
prior art references, but its teachings were never specifically considered by the
examiner for the claims of the 124 Patent. Witten was never cited during
History (EX1002) at 311-12. However, the article was never applied to other
limitations, and the more complete Witten textbook relied on herein was never
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i. Claim 19
computing device. Fukushima (EX1003) at 1:6-9; see also id. at Abstract, 2:42-65;
19[a]. receiving and displaying a partial text entry, comprising receiving at least
part of the partial text entry via a keyboard, the partial text entry comprising at
least a first character;
pointing on a touch screen, and the partial text entry comprises at least a first
character. For example, a user can use a stylus to draw a t, which is then
device:
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FIG.6C
Id. at 9:8-15 and Fig. 6C; see also id. at 2:66-3:1, 4:63-67; 5:15-32, 5:38-45, Figs.
1, 5 (steps 405 and 406 demonstrating receiving and displaying a character input),
6B-E, 7, 11.
Fukushima teaches that while its invention was described in the context of
keyboard character input systems. Id. at 19:24-30, 5:39-45; see also Lieberman
19[b]. in response to receipt of the first character of the partial text entry,
obtaining a plurality of completion candidates from among a group of
completion candidates, wherein each of the plurality of completion candidates
includes a portion matching the partial text entry;
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Subsequently, by the character recognition portion 40, character
recognition is performed to store a new character in the direct
character string storage buffer 50. Then the display control portion
100 displays the new character on the input character string region
111 in place of the trace data (steps 405 and 406). At this time, the
FIG.6B
character string predicting portion 60 performs prediction for the
character following the new character to store the predicted character
in the predicted character string storage buffer 70.
Id. at 8:32-40; see also id. at 5:39-55, 6:38-54, 6:61-65, 7:21-43, 9:8-17, Figs. 1, 4-
6F. For example, upon entry of the very first character t, the system produces a
plurality of completion candidates of words that include a portion that starts with,
FIG.6C
Id. at Fig. 6C, see also id. at 6:10-22 (The character string predicting portion 60
the direct character string storage buffer 50. By retrieving word forward matching
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U.S. Patent No. 7,681,124
with the direct character string from the word dictionary, the prediction of the word
level can be realized.); 9:17-25, 13:27-36, Fig. 10C. Although Figure 6C shows
only the predicted portion of the candidate strings, Fukushima teaches that the
candidate strings may be displayed as full spelling of words (for example, not
search list within a graphical user interface: On the predicted character string
region 112, the candidate character strings subsequent to t are displayed. The
display at this condition is as illustrated in Figure 6(C). Id. at 9:21-24; see also id.
at Abstract (A character string input system includes a display portion 110 for
39; see also id. at 10:10-15 (full spelling of words). For example, Figures 6C and
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U.S. Patent No. 7,681,124
FIG.6C
[I]n the predicted character string region 112, the candidates of the
character string are displayed. Then, from the selection command
input portion 30, the command for selection is input to the display
portion 110. Then, at the trailing end of the input character string in
the input character string region 111, the candidate of the selected
character string is added so as to be displayed together with the front
portion.
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FIG.6E
Id. at 7:36-43 and Fig. 6E; see also id. at 5:39-45, Figs. 4-5, 6A-6F, Abstract, 2:58-
FIG.6F
60, 3:20-22, 4:63-5:1, 9:36-47.
-311
t r a d i n g
19[e]. modifying the display of the partial text entry to correspond to the
particular completion candidate selected from among the plurality of completion
-310
candidates at least while the particular completion candidate remains selected;
312
Fukushima teaches that when a user selects a prediction character string
from the search list, the direct character string portion of the display will be
modified to include the selected string. See id. at 3:42-47; see also id. at 7:36-43,
Figs. 1, 4, 6F. For example, Fukushima teaches that if a user has entered tr as the
partial text entry and then selects trading, from the search list, ading will be
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Id. at Fig. 6F; see also id. at 9:36-47. Further, as noted, Fukushima teaches that the
completion candidates can also be the full spelling of words, instead of just the
19[f]. detecting modification of the partial text entry by the user via the
keyboard;
adding r after t), the system will detect the user input modifying the text entry:
When r is input, the display on the input character string region 111
is varied to include the handwritten character r. Through the process
set forth above, the handwritten character r is recognized and the
display on the input character string region 111 is changed to display
encoded character codes of tr is displayed.
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FIG.6C
Fukushima teaches that if the user continues inputting text (e.g., adding r)
without selecting a completion candidate, the system will detect user input
modifying the text entry and produce a modified list of completion candidates
20
U.S. Patent Mar. 3, 1998
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Sheet 7 o f 16 5,724,457
U.S. Patent Mar. 3, 1998 Sheet 7 o f 16 U.S.5,724,457
Patent No. 7,681,124
FIG.6C FIG.6D
FIG.6D
FIG.6E
FIG.6E
FIG.6F
Id. at 9:16-39 and Figs. 6C-6E (annotated).
FIG.6F Also, as discussed, Fukushima teaches -311
t r a d n g
-311 i
that the completion candidatest can
r abed the
i full
n g spelling of words, not just the
-310
-310
portion to be added. See id. at 10:10-15. 312
312
19[h]. obtaining and displaying in the search list a further modified plurality of
completion candidates from among the group of completion candidates, if a
completion candidate is accepted via the search list from the modified plurality
of completion candidates, wherein each of the further modified plurality of
completion candidates includes a portion matching the accepted completion
candidate.
etc.). Witten, however, teaches this limitation. For example, Witten teaches that
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U.S. Patent No. 7,681,124
after a completion candidate is selected from a modified list, the candidates
displayed in the prediction window are updated, providing a further modified list:
The window below gives predictions from which the user can select
the next characters of text. On the left is the visual context, the
characters that precede the cursor in the text window. On the right is a
menu of predictions that are offered as suggestions of how the context
might continue. The user enters text by choosing one of these and
clicking at a particular point within it. Characters up to that point are
inserted into the upper window, and both context and predictions in
the lower one are updated accordingly - the context moves on and the
predictions change completely. . . .
Figure 4.4 illustrates the entry of several words of text in a sequence
of eight screen images. For presentation purposes, the windows are
rather small and are placed side by side. First, the words
Reactive#Keyboard# are entered. The initial two letters are
taken from Research, and to the right of the second snapshot can be
seen the updated context and new predictions. At this point
active#Keyboard# is entered with a single mouse click, and
fresh predictions appear. Again two words - primed#with# - are
entered together. The fourth image shows the effect of moving the
cursor back into the context part of the prediction window: Now the
last few characters of context (with#) are highlighted and, when the
mouse is clicked, deleted from the text buffer (and, of course, from
the context too). The remaining illustrations show more words, some
of them incomplete, being entered. The net result is that six words are
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entered in eight selections from a four-item menu, including one
selection that was needed to delete an erroneously chosen word.
Witten (EX1004) at 89-91; see also id. at 89 (The prediction window is scrollable,
and always contains 128 predictions so that any ASCII character can be entered
and users can dispense with a physical keyboard.), 41 (it was common for a
predictive text system to change its display after each user selection to present a
new subset of predicted elements); see also id. at 96 (When a menu selection is
madea new set of menu items is generated from long-term memory; and the new
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U.S. Patent No. 7,681,124
Id. at 90. Figure 4.4 shows that the prediction window displays both the last-
selected completion candidate with the next modified list of suggested completion
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U.S. Patent No. 7,681,124
Witten also teaches that a portion of the new completion candidates will
match the accepted completion candidate. For instance, where a user has accepted
the selected completion candidate, Re, on the left, Witten teaches that each of the
new completion candidates suggested are words or phrases that begin with Re,
entry feature
This of
text allowing a user towithobtain
has been generated the a new list of completion
a-very-large candidates
.. based
Reactive Keyboard primed from ID imed-from- ll;:e-text-generat
represented-by-t
on a selected completion candidate to Fukushimas predictive text
some-statistical entry system.
This text has been generated with the e-text-generated
See Lieberman
Reactive Decl. (EX1009)
Keyboard primed fromatthll!DI
49-50. A d-from-th
PHOSITA would have appreciated
~int-of-view
This-text-has-be
at-the-highest-o
that this feature would improve Fukushima by further enhancing the speed and
This text has been generated with the oint-of-view-if-t
Reactive Keyboard primed from this Pl!lllli om-this-p ~ex.CKP-pap
efficiency of user input and further reducing the number of characters
roves-extremely- to be
erhaps-easiest-t
manually input, which are stated goals of Fukushima (e.g., at 2:25-30, 19:1-7). Id.
Figure 4.4. Several snapshots of the screen during text entry with RK-Pointer.
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U.S. Patent No. 7,681,124
at 50. Further, Fukushima contemplates that suggested completion candidates can
candidates will begin with (e.g., a portion will match) the updated partial text
entry, as discussed above for 19[g].3 Thus, a PHOSITA would have appreciated
that a selected completion candidate could be used to further search for additional
completion candidates, as taught by Witten, and that this search could be done
using Fukushimas text prediction functions in the same manner as though the
Fukushima. Id. Such an added feature, therefore, would have required minimal
ii. Claim 20
device. See supra Sec. IV.B(i) at 19[P]. Fukushima also teaches that this method
3
This continuous updating normally occurred in conventional text prediction systems
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The character string input portion 10 receives a trace data or pattern
data of a handwritten character. The character string input portion 10
may be realized by a pointing device and a plane which may detect
the pointing position as a two-dimensional coordinate data. In the
already commercialized pen type computer, the character string input
portion 10 has been realized by a stylus pen and a tablet. Also, the
character string input portion 10 may be realized by pointing on a
touch panel by a finger, or by employing a mouse as the pointing
device.
20[a]. receiving via the personal computing device a partial text entry entered
into the personal computing device by a user with the pointing device, the partial
text entry comprising at least a first character;
Fukushima also teaches that text may be entered using a pointing device. See
20[b]. in response to receipt of the first character of the partial text entry,
retrieving a first plurality of completion candidates selected from among a group
of completion candidates stored in a dictionary, wherein each of the first
plurality of completion candidates includes a portion matching the partial text
entry;
Fukushima teaches this limitation. See supra Sec. IV.B(i), claim 19[b].
Further, Fukushima expressly teaches that the completion candidates are stored in
and obtained from word dictionary 200. Fukushima (EX1003) at 6:10-15, 10:38-
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20[c]. displaying the first plurality of completion candidates in a search list
within a graphical user interface;
Fukushima teaches this limitation. See supra Sec. IV.B(i), claim 19[c].
20[d]. receiving a user input signal associated with the pointing device;
20[e]. if the user input signal corresponds to a first type of user selection with the
pointing device associated with selecting one of the first plurality of completion
candidates, modifying the partial text entry to become a completion candidate
selected from among the first plurality of completion candidates displayed in the
search list;
the claim because the predicate action is not required to occur in this claim. See Ex
Parte Schulhauser, Appeal No. 2013-007847 at 7-9 (P.T.A.B. April 28, 2016)
(precedential) (The Examiner did not need to present evidence of the obviousness
of the remaining method steps of claim 1 that are not required to be performed
IV.B(i), claim 19[d]-[e]; see also id. at 5:23-32, 7:3-14, 11:1-10 (relating to the use
of a pointing device).
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20[f]. if the user input signal corresponds to a second type of user selection with
the pointing device associated with using a selected one of the first plurality of
completion candidates to perform further searching, retrieving a second plurality
of completion candidates selected from among the group of completion
candidates stored in the dictionary, wherein each of the second plurality of
completion candidates includes a portion matching the selected one of the first
plurality of completion candidates.
This conditional if step is not a limitation on the BRI of the claim because
the predicate action is not required to occur in this claim. See Ex Parte
limitation is a necessary step, Witten teaches it. See Section B(i), claim 19[h]; see
pointing device). Witten also teaches that in predictive text entry systems, words
(EX1004) at 52-57, 138. For the same reasons as expressed with respect to claim
19[h], a PHOSITA would have found it obvious to combine the teachings in Witten
iii. Claim 21
U.S. Pat. No. 5,367,453 to Capps et al. (Capps) was filed on August 2,
1993 and issued on November 22, 1994 and, therefore, is prior art to the 124
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for correcting words entered into a pen-based computer system. Capps (EX1005)
solutions as interfaces for text prediction functionality; for example, both may
utilize word or character suggestion lists and both are aimed at attempting to
accurately predict the text a user is intending to enter by comparing input text
against stored text patterns, such as a dictionary. See Lieberman Decl. (EX1009) at
42, 58. And, like the 124 Patent, Capps teaches using a digital, on-screen
keyboard for entering characters into a computer system and allowing a user to
view either a list of suggested words or the digital keyboard. See Capps (EX1005)
at Abstract, 9:58-10:14, 10:34-41, Figs. 6A-9. Therefore, Capps is both in the field
of endeavor of and reasonably pertinent to, and, thus, analogous to the 124 Patent.
i. Claim 36
and 20[P]-[a].
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36[a]. activating a digital keyboard for user input on a graphical user interface
of the personal computing device;
it does teach that its system may be implemented using a touch panel or touch
above, Fukushima also teaches that its system may be applied to systems using a
If decision step 120 determines that the gesture is not on an ink word,
it is then determined in a step 124 whether the gesture is on the
keyboard icon K. If it is, then the correction list C is again hidden and
a keyboard is displayed on screen 52 in the step 126. The process 88
is then completed as indicated at 130.
...
FIG. 8 is used to illustrate the step 126 of FIG. 7. As can be seen in
FIG. 8, the correction list C has been removed from the screen 52
allowing the selected word object more to be seen on the screen 52.
A functional image of a keyboard 132 is displayed on the lower
portion of the screen 52. The keys of the keyboard 152 can be
activated by tapping the keys with the stylus 38. In this way, a word
can be explicitly entered into the computer system 10 to replace a
misrecognized word object W.
Capps (EX1005) at 10:9-33; see also id. at Figs. 6-10.
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U.S. Patent No. 7,681,124
U.S. Patent
,9%@
Nov. 22, 1994
Sheet 6 of 12
5,367,453
Id. at Figs. 6a & 8.
keyboards, including those on touchscreens, were already well known in the art,
and a PHOSITA would have been motivated to implement a digital keyboard, such
screen and use of a keyboard for text input. See Lieberman Decl. (EX1009) at
53, 57-58. A PHOSITA also would have appreciated that providing a digital
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U.S. Patent No. 7,681,124
35; Capps (EX1005) at 1:57-2:10, 2:51-58). Lieberman Decl. (EX1009) at 58.
Both Capps and Fukushima relate to text entry systems designed to accurately and
efficiently predict the text a user intends to input on a personal computing device,
into Fukushimas text entry system would have required only minor, well-
character string input portion 10 may be realized by a pointing device and a plane
see also id. at 5:39-45, 9:3-15, 19:24-30 (can be input via keyboard). Capps also
receipt of the input string. See supra Sec. IV.B(i) at 19[b]-19[c]. Fukushima does
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activating a search list of word correction candidates (such as by a user double
tapping on the entered word more shown in Figure 4b, which activates the search
list shown in Figure 6a) while not displaying Capps digital keyboard:
U.S. Patent
,9%@
Nov. 22, 1994
Sheet 4 of 12
5,367,453
7:39-see also id. at 7:29-8:32; Figs. 3-5. Capps teaches that the user may select the
allow characters to be typed, while hiding the correction search list, as shown in
Figs. 8 & 10 (id. at 10:9-51), or, alternatively, a button B may be used to hide the
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Id. at Fig. 8; 10:24-51. Capps also teaches that it may go into a wait state where
the system awaits a gesture from the user (i.e., awaiting further user input). Id. at
7:53-54.
As discussed above, Fukushima teaches use of a touch panel and that its
predictive text system may be implemented with a keyboard; and, further, it would
have been obvious to combine Capps feature of an optional digital keyboard and
search list, which can each be alternatively hidden or displayed, with Fukushimas
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deactivating a keyboard and activating a search list (and vice versa), which would
have been obvious in light of the teachings in Capps, with the text prediction
stated goals of addressing low input speed, input efficiency, and error reduction
functionality in Capps, which has similar stated goals and which provides for more
efficient use of screen space. Id. at 58; see also EX1003 (Fukushima) at 19:1-11,
recognized that the word correction list in Capps is analogous to the word
completion list in Fukushima, as both use predictive text entry; although they serve
slightly different predictive functions, they employ very similar technology, and
the considerations for how to display such lists would have been nearly identical
etc.). Lieberman Decl. (EX1009) at 53-58, 42. As such, a PHOSITA would have
been capable of this combination and would have appreciated that it would have
yielded predictable results. Id. at 58. Therefore, this limitation is obvious over
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36[e]. in response to the user input corresponding to terminating the search once
activated, clearing the first plurality of completion candidates from the user
interface and activating the digital keyboard for further user input without
causing the input string to be updated, and awaiting further user input via the
digital keyboard.
Capps teaches that the search for candidates may be terminated and the
search list cleared by a user selecting to activate the keyboard for further input:
If decision step 120 determines that the gesture is not on an ink word,
it is then determined in a step 124 whether the gesture is on the
keyboard icon K. If it is, then the correction list C is again hidden and
a keyboard is displayed on screen 52 in the step 126. The process 88
is then completed as indicated at 130.
Capps (EX1005) at 10:9-14; see also id. at 10:24-33 (describing text entry with the
displayed keyboard), Fig. 7 (steps 124 and 126), Figs. 6a, 6b, 8. And, as noted,
Capps teaches awaiting further user input between gestures. Id. at 7:53-54. As
alternating between a keyboard and search list in Capps with the text prediction
system of Fukushima in order to allow the keyboard and search list to be viewed
easily using less screen space on a small computing device and to further
Fukushimas goals of enhancing input speed and efficiency, while reducing errors.
See Sec. IV.C at 36[c]; see also Lieberman Decl. (EX1009) at 53-58.
Implementing these concepts in Capps into the system of Fukushima would have
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required minor, well-known modifications in programming and yielded predictable
ii. Claim 41
i. Claim 1
Fukushima teaches this limitation. See Secs. IV.B(i), 19[P]-[c]; see also
Fukushima teaches this limitation. See Sec. IV.B(i), 19[a], [d], [f].
[1(b)] if the user input signal corresponds to declining all completion candidates
displayed in the search list, terminating automated searching with the search list
and displaying a digital keyboard while not displaying the search list with no
consequence to the text entered into the personal computing device, and waiting
for further user input from the digital keyboard;
the claim because the predicate action is not required to occur in this claim. See Ex
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To the extent this limitation is necessary, the combination of Fukushima and
Capps teaches it. Fukushima does not expressly teach ending the display of a
search list upon receipt of a user input corresponding to declining all completion
candidates and displaying a digital keyboard while not displaying the search list.
Fukushima does, however, disclose that a user may decline a set of suggested
become tr), rather than selecting a completion candidate from the displayed list.
user opting to enter further text in this situation had declined all of the suggested
displaying a digital keyboard while not displaying the search list, Fukushima does
teach that its system may be implemented using a touch panel or touch screen
and that its present invention may be implemented using a keyboard for
character entry. Fukushima (EX1003) at 5:29-32, 7:3-14, 11:1-10; see also id. at
5:39-45; 19:24-30.
and results in displaying a digital keyboard while hiding the list. See Capps
(EX1005) at 10:9-14 (a gesture on a keyboard icon hides the correction list and
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displays a digital keyboard); see also id. at 9:63-66 (By hide it is meant that the
view system of the present invention is told to remove the image of the correction
list C from the screen 52.), 10:15-23; see also id. at Fig. 7 (steps 124 and 126),
Figs. 6a, 6b, 8. Thus, the selection of the keyboard icon K would be understood by
a PHOSITA to be a user input signal declining all candidates in the correction list.
See Lieberman Decl. (EX1009) at 55. After this selection, the list is hidden and a
For the same reasons as discussed with respect to limitation 36[e], it would
have been obvious to modify the text prediction interface in Fukushima with the
alternating digital keyboard and search list feature taught by Capps. See supra Sec.
This conditional if step is not a limitation on the BRI of the claim for the
same reasons discussed above. See Ex Parte Schulhauser, Appeal No. 2013-
007847 at 7-9.
Capps teaches it. Fukushima teaches the concept of a selection command, i.e., a
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the partial text entry to become that completion candidate. See supra Sec. VI.B(i),
19[d]-[e].
the use of a digital keyboard, which can be displayed while the correction list is
hidden. As discussed, it would have been obvious to modify the text prediction
interface in Fukushima with the alternating digital keyboard and search list feature
taught by Capps. See supra Sec. IV.C(1) at 36[e]; see also Lieberman Decl.
further searching to obtain and display a new list of completion candidates based
on a selected completion candidate being selected by the user. It would have been
obvious to a PHOSITA to combine this feature of Witten with the text prediction
system of Fukushima. See supra Sec. IV.B(i), 19[h]; see also Lieberman
Further, as discussed above for 36[c], it would have been obvious to apply
search list, or at least an obvious variation thereof, to the text prediction interface
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in Fukushima to teach the second part of this limitation. See Sec. IV.C(1) at 36[c];
ii. Claim 2
selected candidate with the interface of Fukushima. See id.; see also Lieberman
iii. Claim 5
Fukushima teaches this preamble. See Sec. IV.B(i)-(ii), claims 19[P] and
20[P]-[a].
response to a prior selected possible completion candidate. See Sec. IV.B(i), 19[h].
It would have been obvious to modify the interface of Fukushima with Wittens
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feature of obtaining a new set of possible completion candidates in response to a
prior selected, or located, completion candidate. See id.; see also Lieberman Decl.
user, such as when the user enters t. See supra Sec. IV.B(i), 19[b] and 19[f]-[g].
5[b]. displaying at least one of: (i) the plurality of possible completion
candidates; and (ii) characters selectable by the user;
candidate, as taught by Witten. See Sec. IV.B(i), 19[h]; see also Lieberman Decl.
5[c]. selecting one of the plurality of possible completion candidates for use by
an application in response to user input;
located possible completion candidate selected by the user. See Witten at 89-91,
Fig. 4-4; see also id. at 25, 82, 96 (each relating to presenting and then selecting
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5[d]. displaying a digital keyboard on a user interface when a user is entering
characters a keystroke at a time;
keyboard may be used with its invention. Fukushima (EX1003) at 5:39-45; see
also id. at 19:24-30. Fukushima also discloses use of a touch screen or touch
panel for input. Id. at 5:29-32, 7:3-14, 11:1-10. Fukushima also discloses entering
characters one at a time. See, e.g., id. at 9:3-47 (teaching the entry of t and then
r, etc.).
limitation 36[a], it would have been obvious to combine Capps digital keyboard
with Fukushima for entering characters one at a time. See supra Sec. IV.C(i) at
5[f]. if the user input corresponds to activating a search list, clearing the display
of the digital keyboard, displaying the search list and waiting for further user
input; and
This conditional if step is not a limitation on the BRI of this claim because
the predicate action is not required to occur. See Ex Parte Schulhauser, Appeal No.
2013-007847 at 7-9.
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However, to the extent this is a necessary limitation, this limitation is
obvious over Fukushima in view of Capps. See supra Sec. IV.C(i) at 36[c].
5[g]. if the user input corresponds to terminating use of the search list once
activated, clearing the display of the search list, displaying the digital keyboard
and waiting for further user input.
This conditional if step is not a limitation on the BRI of this claim because
the predicate action is not required to occur. See Ex Parte Schulhauser, Appeal No.
2013-007847 at 7-9.
obvious over Fukushima in view of Capps. See supra Sec. IV.C(i), 36[e].
iv. Claim 6
6. The method of claim 5 wherein performing the search of the set of completion
candidates in response to the prior located possible completion candidate,
comprises performing the search of the set of completion candidates in response
to the prior located possible completion candidate being selected by the user.
Witten teaches this limitation. See supra Sec. IV.B(i), 19[h]. It would have
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v. Claim 9
9[P]. A method of processing text entered into a personal computing device, the
method comprising:
Claim 9 is nearly identical to claim 19, except that it is a method claim that
recognizes that on-screen digital keyboards already existed in the prior art;
9 in a non-obvious manner over the prior art applied to claim 19 (i.e., Fukushima
in view of Witten). See Sec. IV.B(i), 19[P]; see also 124 Patent (EX1001) at 1:50-
See Section IV.B(i), 19[P]. Further, as discussed above, Capps teaches receiving
text entry via a digital keyboard, and for the same reasons discussed with respect to
claim 36, it would have been obvious to a PHOSITA to implement Capps digital
9[a]. receiving and displaying a partial text entry, comprising receiving at least
part of the partial text entry via a digital keyboard displayed in a graphical user
interface of the personal computing device, the partial text entry comprising at
least a first character;
teaches this limitation. See supra Sec. IV.B(i), 19[a], Sec. IV.D(v), 9[P].
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U.S. Patent No. 7,681,124
9[b]. in response to receipt of the first character of the partial text entry,
obtaining a first plurality of completion candidates from among a group of
completion candidates, wherein each of the first plurality of completion
candidates includes a portion matching the partial text entry;
9[c]. displaying the first plurality of completion candidates in a search list within
a graphical user interface;
9[e]. modifying the display of the partial text entry to correspond to the
particular completion candidate selected from among the first plurality of
completion candidates;
9[f]. detecting modification of the partial text entry by the user via the digital
keyboard;
teaches this limitation. See Sec. IV.B(i), 19[f]; see also Sec. IV.D(v), 9[P].
teaches this limitation. See Sec. IV.B(i), 19[g], see also Sec. IV.D(v), 9[P].
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Further, Fukushima teaches that the modified completion candidates are obtained
and displayed each time the partial text entry is modified. For example, in
Figures 4-5, Fukushima teaches that if a new character is entered in the direct
character string (i.e., partial text entry) at step 405, the candidate character strings
410, and the process restarts. See Fukushima (EX1003) at 8:16-49, Figs. 4-5, 6E-F.
candidates based on a completion candidate being selected from the search list, and
it would have been obvious to combine this feature into the system of Fukushima.
See Sec. IV.B(i), 19[h]; see also Lieberman Decl. (EX1009) at 50.
Capps teaches displaying a search list of candidates while not displaying the
digital keyboard. See Sec. IV.C(i), 36[c]. It would have been obvious to modify the
candidates while not displaying the digital keyboard, as taught in Capps. See id.;
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vi. Claim 10
Claim 10. The method of claim 9, wherein each individual completion candidate
U.S.either
from Patent Mar. 3, of
the first plurality 1998 Sheet
completion candidates 5,724,457
11 o f 16 or the modified plurality
of completion candidates is displayed in the search list with the part of the
individual completion candidate matching the partial text entry displayed in a
manner different from the remaining part of the individual completion
candidate. FIG.10A
-331 in Fukushima.
U.S. This limitation Mar.
Patent is obvious
3, 1998 in light
Sheetof11 othe
f 16 teachings 5,724,457
Specifically, Fukushima teaches that bold, color, underlining or other methods may
FIG.10A
be used to visually differentiate a prediction portion from the partial-entry portion:
FIG.10B
In the shown embodiment, by utilizing the bold -331
letter for the
t 331
predicted character string, the predicted character string is
discriminated from the input character string. The method of
providing distinction for the predicted character is not specified to the
FIG.10B
FIG.10C
bold letter, but can be differentiated in color or in providing underline
t
t k e
a methods.
and other various
331
-331
FIG.10C
FIG.10D
tt aa k e -331
b -331
FIG.10D
FIG.10E
tt a
a bb 1 e -331
-331
FIG.10E
FIG. 1 OF
tt aa bb 11 ee t 49 -331
331
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U.S. Patent No. 7,681,124
Id. at Figs. 10C & 10E. Further, Fukushima teaches that a user may sequentially
flip through the plurality of completion candidates, with the matching portion (t)
displayed differently from the remaining portion (e.g., ake, alk, able,
U.S. until
Patent 5,724,457
ablet,), the desired candidate is Sheet
Mar. 3, 1998 16 o f 16
selected, as shown below. Id. at 16:66-
17:25.
F IG .1 5 A
331
t a k e
FIG.15B
a 1 k 331
FIG.15C
t a b 1 e 331
FIG.15D
t a b 1 e t -331
FIG.15E
t a b 1 e t -331
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Id. at Figs. 15A-15E. While Fukushima does not expressly show these plurality of
completion candidates with the predicted portion appearing in bold in the search
list per se, a PHOSITA would have found it obvious in light of Fukushima to
display the candidates in this manner in the search list as well, especially given
Fukushimas teaching that full spelling[s] can be used in the search list. See
PHOSITA would have recognized this visual differentiation technique would have
simply moving the location of differentiated candidates from the entry field to the
vii. Claim 16
that each completion candidate in the search list, initial or modified, begins with
the partial text entry. See Section IV.B(i) at 19[b], 19[g]; see also Fukushima
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(EX1003) at 6:10-22, 10:10-15 (full spelling may be used for completion
viii. Claim 37
37. The method of claim 36 wherein updating the input string with the selected
completion candidate further comprises displaying a second plurality of possible
completion candidates on the graphical user interface, each comprising the
updated input string, and awaiting further user input.
update the input string and search for and display further matching candidates, i.e.,
candidates comprising the updated input string, and it would have been obvious
to incorporate this feature into Fukushimas system. See Section IV.B(i), 19[h]; see
ix. Claim 39
39. The method of claim 36 wherein each of the first plurality of possible
completion candidates is of at least a predetermined minimum length set by the
user.
Witten teaches this limitation. Witten (EX1004) at 92. Witten teaches that
there are many approaches to determine the allowed length of candidates in text
prediction interfaces. Id. The simplest example Witten teaches is using a fixed
length that fills all available menu space, and it explains that [a] minimum length
minimum preview size of seven letters is needed by normal subjects for efficient
copy-typing. Id.
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Witten teaches that this length feature may be set by the user through the
whereby users modify the parameters of the prompting device. Display control
has been discussed above in terms of how the user can set the length of
user with candidates of too few letters. See Lieberman Decl. (EX1009) at 51-52;
see also Witten (EX1004) at 73 (Table 3.5, listing criticisms on older systems such
preferences). Such would have required only minor modifications in software and
U.S. Patent No. 6,307,548 to Flinchem et al. was filed on September 24,
1998 and is prior art to the 124 Patent pursuant to 35 U.S.C. 102(e). Flinchem
claims priority to its provisional application, filed on September 25, 1997, which
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See Flinchem Provisional (EX1008). Flinchem was not cited during prosecution of
Like the 124 Patent, Flinchem relates to systems and methods for entering
Flinchem (EX1006) at Abstract, 1:12-61, 3:34-42; see also id. at 4:55-5:3, 6:4-18,
suggests words or word stems, ordered by frequency of use that could result from
the keystroke sequence as it is typed by a user. See id. at Abstract, 3:43-57, 4:4-9,
4:55-65, 10:46-59, Figs. 1, 3A-C. Therefore, Flinchem is both within the field of
endeavor of and reasonably pertinent to, and, thus, analogous to the 124 Patent.
i. Claim 12
12. The method of claim 9, further comprising: (a) receiving at least the first
character of the partial text entry via the digital keyboard; and (b) displaying
simultaneously the search list and the digital keyboard in the graphical user
interface when the partial text entry comprises at least the first character.
The 124 Patent admits that prior art systems that continually displayed
both a digital keyboard and completion candidate list existed. See 124 Patent
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In accordance with yet another aspect of the invention, multiple
interpretations of the keystroke sequence are provided to the user in
the selection list. These multiple interpretations are simultaneously
presented to the user upon receipt of each keystroke entered by the
user. The user may select from the alternate interpretations by
pressing the Select key a number of times, or by directly touching the
desired interpretation in the selection list presented on a touchscreen.
Flinchem (EX1006) at 4:55-5:3, Fig. 1; see also id. at 10:28-35, Figs. 3A-3C,18A-
list and the digital keyboard in the graphical user interface when the partial text
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system because it was intuitive and beneficial to display at least short search lists
(without consuming excessive space) at the same time as displaying the keyboard
to provide a simpler interface with fewer screen changes and user gestures. See
Lieberman Decl. (EX1009) at 59-61. This would have been a matter of simple
ii. Claim 14
teaches that the search list is simultaneously presented to the user upon receipt of
each keystroke entered by the user). As discussed, it would have been obvious to
incorporate this feature of Flinchem into the system of Fukushima. See id.; see also
U.S. Patent No. 5,797,098 to Schroeder (Schroeder) was filed on July 19,
1995 and issued on August 18, 1998, and, therefore, is prior art to the 124 Patent
under 35 U.S.C. 102(e). Like the 124 Patent, Schroeder teaches a character input
system wherein one or more completion candidates, such as words, are predicted
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and displayed for selection based upon input of a partial text entry. See Schroeder
(EX1007) at Abstract, 1:37-53, 4:20-7:54, Figs.4-6. And like the 124 Patent,
devices with space limitations. Id. at Abstract, 1:5-33. Therefore, Schroeder is both
within the field of endeavor of and reasonably pertinent to, and, thus, analogous to
the 124 Patent. See Lieberman Decl. (EX1009) at 62, 38, 42. Schroeder was
cited in an IDS among over 200 prior art references but was never substantively
i. Claim 19
unit, such as a cellphone, to process text input into the device for a predictive text
entry system:
character and word entry), Abstract, Figs. 1A-6; see also id. at 3:46-63 (describing
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the use of a processing system, including a CPU and memory); see also
19[a]. receiving and displaying a partial text entry, comprising receiving at least
part of the partial text entry via a keyboard, the partial text entry comprising at
least a first character;
[A]s shown in FIG. 4, if the user has entered the letters PLE in the
display 11 (either using prior art techniques, or the predictive
keyboard input technique described above), a dictionary lookup
routine may display the word PLEASE, PLEAD, and PLEDGE
on a portion of the display 11 so that the candidate words are placed
adjacent to associated soft keys 9.
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Schroeder (EX1007) at 6:27-34 and Fig. 4; see also id. at 6:46-61, 7:10-25
(describing the search process in a dictionary tree), Fig. 5 (steps 500, 506).
19[b]. in response to receipt of the first character of the partial text entry,
obtaining a plurality of completion candidates from among a group of
completion candidates, wherein each of the plurality of completion candidates
includes a portion matching the partial text entry;
[A]s shown in FIG. 4, if the user has entered the letters PLE in the
display 11 (either using prior art techniques, or the predictive
keyboard input technique described above), a dictionary lookup
routine may display the word PLEASE, PLEAD, and PLEDGE
on a portion of the display 11 so that the candidate words are placed
adjacent to associated soft keys 9.
Id. at 6:27-41; see also id. at 6:46-61, 7:10-25 (describing the search process in a
Schroeder notes that its system may begin lookup after any integer N
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text entry. Id. at claim 1 (displaying a next character subset, comprising a
represents any number of initial characters, including one. See Lieberman Decl.
Witten (EX1004) at 52; see also id. at 17-18 (using text from Thomas Hardys Far
From the Madding Crowd as context, noting that the system will recommend
predictions for the user after [h]aving typed the first letter.) Obtaining
PHOSITA would have found it obvious to implement this concept from Witten into
the system of Schroeder, and it would have yielded predictable results. See
Lieberman Decl. (EX1009) at 67-68, 33. Further, a PHOSITA would have been
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character based on Schroeders express teaching of N input characters, and a
the amount of manual input, which would have furthered Schroeders stated goal
of speeding up input. See id.; see also Schroeder (EX1007) at Abstract, 6:17-22.
If one of the candidate words is the word being entered by the user,
then the user need only press the associated soft key 9 to have the
entirety of the candidate word automatically entered into the display
11. Thus, for example, if the user was entering the word PLEASE,
and had already entered the letters PLE, the user need only press the
left-most soft key 9 shown in FIG. 4 to enter the entirety of the word
PLEASE.
Schroeder (EX1007) at 6:23-41; see also id. at 6:46-61, 7:10-25 (describing the
19[e]. modifying the display of the partial text entry to correspond to the
particular completion candidate selected from among the plurality of completion
candidates at least while the particular completion candidate remains selected;
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If one of the candidate words is the word being entered by the user,
then the user need only press the associated soft key 9 to have the
entirety of the candidate word automatically entered into the display
11. Thus, for example, if the user was entering the word PLEASE,
and had already entered the letters PLE, the user need only press the
left-most soft key 9 shown in FIG. 4 to enter the entirety of the word
PLEASE.
Id. at 6:23-41; see also id. at 6:46-61, 7:10-25 (describing the search process in a
19[f]. detecting modification of the partial text entry by the user via the
keyboard;
Schroeder teaches that if the user continues inputting text without selecting a
completion candidate, the system will continue to detect user input: The user can
continue entering text or commands as desired. If the user does not accept one of
the candidate words (STEP 512), additional input is accepted from the user (STEP
a user continues to input text without selecting a completion candidate (STEP 512),
the system will return to the start of the word prediction process at STEP 500,
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await additional user input, and again display closest word matches to the modified
/ 500
ACCEPT USER INPUT ___I
502
INPUT I
PROCESS COMMAND COMMAND?
506
DISPLAY INPUT /
CHARACTER
A
MATCH INPUT CHARACTER
f 508
TO DICTIONARY TREE
572
USER
ACCEPTS VIA
ASSOCIATED
KEY?
YES
FIG. 5
See id. at Fig. 5, see also id. at 6:23-7:9; see also Lieberman Decl. (EX1009) at
64.
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19[h]. obtaining and displaying in the search list a further modified plurality of
completion candidates from among the group of completion candidates, if a
completion candidate is accepted via the search list from the modified plurality
of completion candidates, wherein each of the further modified plurality of
completion candidates includes a portion matching the accepted completion
candidate.
66, 68. For example, Schroeder already contemplates that completion candidates
and that the completion candidates will begin with (i.e. a portion will match) the
partial text entry, as discussed above for 19[g]. A PHOSITA would have
taught by Witten, and that this would further Schroeders goal of enhancing speed
and efficiency of input. Id. at 68. Such a feature would have required minimal
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ii. Claim 20
device. See Section IV.F(i), 19[P]. A PHOSITA would have understood Schroeder
to teach that its inputs could be performed via a pointing device for each of the
limitations of claim 20, based on Schroeders teaching that a touch panel could
be used. See Schroeder (EX1007) at 2:43-45 (The keys of the cellular telephone 1
(EX1009) at 65. Interacting with a touch panel is within the BRI of pointing
device. See 124 Patent (EX1001) at 7:44-53 ([T]he term pointing device
means an input device that allows a user to select one choice amongst one or many
example, a pen, stylus, or finger.). Further, the 124 Patent itself recognizes that
for example, existed in the prior art. See 124 Patent (EX1001) at 1:30-61.
preamble.
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20[a]. receiving via the personal computing device a partial text entry entered
into the personal computing device by a user with the pointing device, the partial
text entry comprising at least a first character;
20[b]. in response to receipt of the first character of the partial text entry,
retrieving a first plurality of completion candidates selected from among a group
of completion candidates stored in a dictionary, wherein each of the first
plurality of completion candidates includes a portion matching the partial text
entry;
Schroeder teaches this limitation. See Section IV.F(i), 19[b], 20[P]. Further,
Schroeder teaches use of a dictionary tree for the search function used for word
understand that Schroeder uses a dictionary, which the 124 Patent teaches is
merely a data structure for storing completion candidates. See 124 Patent
20[d]. receiving a user input signal associated with the pointing device;
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20[e]. if the user input signal corresponds to a first type of user selection with the
pointing device associated with selecting one of the first plurality of completion
candidates, modifying the partial text entry to become a completion candidate
selected from among the first plurality of completion candidates displayed in the
search list;
This conditional if step is not a limitation on the BRI of this claim because
the predicate action is not required to occur. See Ex Parte Schulhauser, Appeal No.
and 20[P].
20[f]. if the user input signal corresponds to a second type of user selection with
the pointing device associated with using a selected one of the first plurality of
completion candidates to perform further searching, retrieving a second plurality
of completion candidates selected from among the group of completion
candidates stored in the dictionary, wherein each of the second plurality of
completion candidates includes a portion matching the selected one of the first
plurality of completion candidates.
This conditional if step is not a limitation on the BRI of this claim because
the predicate action is not required to occur. See Ex Parte Schulhauser, Appeal No.
Schroeder in view of Witten renders it obvious. See Section IV.B(i), 19[h]; see
(EX1009) at 68. Witten also teaches that in predictive text entry systems, words
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iii. Claim 21
Claims 3, 4, 7, 8, 11, 13, 15, 17, 18, 21, 38, 40, and 41 recite a computer-
the obvious methods recited in claims 2, 1, 6, 5, 10, 12, 14, 16, 9, 20, 37, 39, and
carrying out the claimed methods and are therefore obvious over the same grounds
as their respective parent claims. Lieberman Decl. (EX1009) at 69-70; see also
Dann v. Johnston, 425 U.S. 219, 230 (1976) (quoting Graham v. John Deere Co.
application to require that those persons granted the benefit of a patent monopoly
prior art references cited in this Petition teaches a computing device having
instructions for directing a processor to carry out their inventions. See Fukushima
out the invention); Witten (EX1004) at 39; Capps (EX1005) at 1:6-56, 2:37-50,
3:46-63, Fig. 1b. A PHOSITA would have understood the same. Lieberman Decl.
(EX1009) at 69-70.
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Further, during prosecution, the examiner recognized that these limitations
File History (EX1002), at 303; see also id. at 306, 313. Therefore, these claims are
V. CONCLUSION
For the forgoing reasons, Petitioner respectfully requests inter partes review
Respectfully submitted,
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A. Real Party-In-Interest
this proceeding, the filing of this petition, or the conduct of any ensuing trial.
B. Related Matters
lead and back-up counsel. 37 C.F.R. 42.8(b)(3) and (b)(4). Jason Mudd will serve
as lead counsel. Ashraf Fawzy will serve as first back-up counsel. Eric Buresh and
4
In the complaints filed in these matters, WordLogic Corporation and 602531 British
Columbia Ltd. represent that 602531 British Columbia Ltd. owns the 124 Patent and that
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Jonathan Stroud will serve as additional back-up counsel. Please direct all
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APPENDIX OF EXHIBITS
Further, a courtesy copy of this Petition for Inter Partes Review was sent via
e-mail to Patent Owners litigation counsel:
Anthony E. Dowell
aedowell@dowellip.com
DOWELL IP
333 W. North Ave #341
Chicago, Illinois 60610
Phone: (312) 291-8351